DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/25 has been entered.
Status of Claims
Claims 1-13 and 15-20 are rejected. Claim 14 is canceled.
Response to Arguments
Claim Objections
The previous claim objections have been withdrawn in view of the amendment.
Claim Interpretation
The claim interpretation have been updated in view of the amendment.
Claim Rejections - 35 USC § 112
Some of the previous 112 rejections have been withdrawn in view of the amendment. There still appears to be various instance of lists of limitations with a missing “and” or “or” missing before the last step to close the list of limitations. See the 112(b) rejections below for further information on how to correct this.
Claim Rejections - 35 USC § 101
Applicant’s arguments, see Remarks, filed 12/30/25, with respect to claims 1-13 and 15-20 have been fully considered and are persuasive. The 101 rejection of claims 1-13 and 15-20 has been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
For “connection means for the connection” in claim 1, the specification recites “two inertial motion sensors (1), each of which is respectively connected to one of the patient's footwear by methods of attachment of known type which, by way of example, may include external casings to be attached to the footwear, or in the upper of the footwear, or by permanent insertion into the sole, insole or foot bed of each footwear” (page 5). The Examiner is interpreting connection means for the connection to be external casing to be attached to the footwear, or in the upper of the footwear, or by permanent insertion into the sole, insole or foot bed of each footwear.
For “at least one remote data collection unit” in claims 1, 10, and 13, claim 1 recites “at least one remote data collection unit, comprising hardware components and software modules.” Therefore, the Examiner the at least one remote data collection unit to be hardware components and software modules.
For “a plurality of distributed units” in claims 1 and 15, claim 15 recites “wherein said plurality of distributed units are of the type of a charging device of said at least one inertial motion sensor.” The Examiner is interpreting a plurality of distributed units to be the type of a charging device of the inertial motion sensor.
For “at least one centralized unit” in claims 14 and 16, claim 16 recites “wherein said at least one centralized unit is of the type of a cloud server.” The Examiner is interpreting at least one centralized unit to be a cloud server.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a device in claim 3, 5, 6, 18, and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
For “a device for switching on” in claims 3, 5, 6, 18, and 20, the specification recites “a push-button, or alternative means, for switching on” (page 6). The Examiner is interpreting the device to be a push-button.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 and 15-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to include the limitation of “automatically receive, store, and process at least one of said at least one motor datum and said at least one physiological datum so as to automatically determine at least one risk datum defining the risk of said patient of experiencing a motor and/or physiologic complication depending on at least one of said at least one motor datum and said at least one physiological datum.” However, as-filed specification fails to disclose these steps in the amended limitation to occur automatically. As such, claim 1 and all its dependent claims contain subject matter that is considered new matter, which is not supported in the as-filed specification in such a way to convey possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 and 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, the limitation of “a plurality of said inertial motion sensors, each connectable to the footwear of said patient; a plurality of said wearable physiological parameter detectors, each wearable by said patient” should recite -- a plurality of said inertial motion sensors, each connectable to the footwear of said patient; and a plurality of said wearable physiological parameter detectors, each wearable by said patient -- since it is the last item of the list of limitations and the list must be closed. For the purposes of examination, the Examiner will interpret the limitations as having “and” between them.
In claim 1, the limitation of “said at least one inertial motion sensor is configured to detect at least one motor datum of the patient wearing said at least one inertial motion sensor;- said at least one wearable physiological signal parameter is configured to detect at least one physiological datum of the patient wearing said at least one wearable physiological parameter detector; - said remote data collection unit is configured to …” should recite said at least one inertial motion sensor is configured to detect at least one motor datum of the patient wearing said at least one inertial motion sensor;- said at least one wearable physiological signal parameter is configured to detect at least one physiological datum of the patient wearing said at least one wearable physiological parameter detector; and - said remote data collection unit is configured to …-- since it is the last item of the list of limitations and the list must be closed. For the purposes of examination, the Examiner will interpret the limitations as having “and” between them.
In claim 1, the last limitation of “wherein the at least one operator interface” should recite –and wherein the at least one operator interface-- since it is the last item of the list of limitations and the list must be closed. For the purposes of examination, the Examiner will interpret the limitations as having “and” between them.
In claim 1, the limitation of “- set risk data in the system;- set the list of parameters that defines a new risk datum;- set the threshold value for each parameter in the list that defines a new risk datum;- set the rule that defines a new risk datum” should recite -- - set risk data in the system;- set the list of parameters that defines a new risk datum;- set the threshold value for each parameter in the list that defines a new risk datum; or - set the rule that defines a new risk datum-- since it is the last item of the list of limitations and the list must be closed. For the purposes of examination, the Examiner will interpret the limitations as having “or” between them.
In claim 10, the limitation of “at least one characteristic datum of the metabolism of said patient” should recite – or at least one characteristic datum of the metabolism of said patient -- since it is the last item of the list of limitations and the list must be closed. For the purposes of examination, the Examiner will interpret the limitations as having “or” between them.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA HODGE whose telephone number is (571) 272-7101. The examiner can normally be reached M-F: 8:00 am-5:00 pm.
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/L.N.H./Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792